[Ip-health] today's House Oversight Hearing on PrEP

James Love james.love at keionline.org
Thu May 16 07:24:26 PDT 2019

At today's House Oversight Hearing on PrEP, one of issues will be access to
a two drug combination, that uses TAF instead of TDF, and is less toxic
than Truvada.

The Goodrx price for Descovy is about $1,800 per month, or $21,600 per
year, for a drug that can be used to prevent an infection.

At present, the US government has rights in two of the Orange Book patents
for Descovy, and Gilead holds four more.

For Truvada, only the two government-funded patents (6,642,245 and
6,703,396) are listed in the Orange Book.

The PrEP for all activists are also pushing to have the CDC enforce its
patents on PrEP (which are for a method of use) on Truvada sales. These
include U.S. Patent Nos. 9,044,509, 9,579,333, and 9,937,191. The 509
patent was filed January 31, 2007. The 191 patent was filed January 13,

The Truvada Orange Book patents, licensed from Emory and extended for
pediatric testing, expire in September 2021.

The CDC and Descovy patents expire much later.

Any extensive use of PrEP will be expensive, unless prices fall

Outside the United States, a generic version of Truvada can be obtained for
less than $0.12 per day, compared to about $60 per day for Gilead’s version
in the United States.


A year ago, HIV patients began a “break the patent” campaign on
https://breakthepatent.org/, calling for HHS to use its march-in or
royalty-free rights on the Truvada patent to expand access for PrEP.

More recently, several of these groups, as well as academic advisors from
the Yale Global Health Justice Partnership and other allies, have changed
the focus to insist that HHS enforce the CDC method of use patents for

One week ago, HHS and Gilead reached an agreement for Gilead to donate
Truvada to patients lacking insurance coverage.


The HHS/Gilead announcement was met with derision from the PrEP for all
camp, as an inadequate response. (See: https://twitter.com/akapczynski)

Separately, two days ago, Mark Lemley and others filed a class action
antitrust case against Gilead on behalf of several patients and payers,
alleging a variety of anticompetitive actions relating to blocking
competition for both Truvada and Descovy.


KEI Comment

KEI is not enthusiastic about the granting or expanding enforcement of
method of use patents for older drugs, including the FTC+TDF or FTC+TAF

Wholly apart from and in addition to the Lemley antitrust action, which
should also be taken into account, KEI suggests policy makers should focus
on why the federal government has failed to use the royalty-free or
march-in rights on Truvada, despite massive evidence public health needs
were not being met, and to consider the use of 28 USC § 1498(a), to
authorize generic production of FTC+TAF, as a prophylactic against HIV

One of the most challenging issues for a § 1498 case concerns the
compensation to patent holders. In the case of Descovy, two primary patents
(the same two in Orange Book for Truvada) have government rights declared,
and the compensation for those inventions would be zero. And, if the use is
limited to using FTC+TAF for PrEP, the impact on Gilead’s current sales for
that use are small, because of the high price, a factor that can work in
the U.S. government’s favor under existing § 1498 caselaw.

These are the Descovy Orange Book Patents:


6642245: Emory. The U.S. Government has rights in this invention arising
out of the partial funding of work leading to this invention through the
National Institutes of Health Grant Nos. AI-26055, AI-28731, NIH 5-21935,
as well as a Veteran's Administration Merit Review Award. Expires,

6703396: Emory. U.S. Government has rights in this invention arising out of
the partial funding of work leading to this invention through the National
Institutes of Health Grant Nos. NIH 5-21935 and NIH AI-26055, as well as a
Veteran's Administration Merit Review Award. Expires, 09/09/2021.

7390791: Gilead: No Government rights. Expires, 05/07/2022.

7803788: Gilead: No Government rights, Expires, 02/02/2022.

8754065: Gilead: No Government rights, Expires, 08/15/2032

9296769: Gilead: No Government rights. 08/15/2032

James Love.  Knowledge Ecology International
U.S. Mobile +1.202.361.3040
U.S. office phone +1.202.332.2670
http://www.keionline.org <http://www.keionline.org/donate.html>

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